Lower Cost Alternative to Challenging Australian Patents
In April 2013, the provisions available for challenging an Australian patent via requesting re-examination were significantly expanded. Notably, since April 2013 re-examination has provided a multi-prong and lower cost “first shot” alternative to seeking revocation of a patent through Federal Court proceedings.
Expanded Grounds for Attack
The expanded provisions provide that novelty, obviousness, subject matter, utility, and sufficiency type grounds may be pursued when requesting re-examination. Prior to April 2013, only the more limited grounds of novelty and obviousness were available. Importantly, the introduction of the additional grounds has substantially increased the potential lethality of a re-examination type attack.
The expanded provisions also mean that, in some circumstances, requesting re-examination as an initial step in challenging granted patents rights could avoid the substantial cost and timing uncertainty associated with revocation proceedings.
In the case of subject matter type grounds, re-examination may present a significant invalidation risk to patents in fields where patent eligibility requirements have shifted to the extent that developments in those fields (such as in the field of pure business methods) are currently considered as non-patentable subject matter. Similarly, the ability to invalidate a patent on utility grounds is significant since this ground was not available for consideration during examination of patent applications where a request for examination was made prior to April 2013.
What is Re-examination?
Re-examination involves requesting the Australian Patent Office to reconsider the claims of an Australian patent. A request for re-examination may be accompanied by prior art documents, and potentially submissions (including expert evidence), which the requestor considers relevant to the validity of the claims of the patent. The prior art and submissions are then considered by a patent examiner and result in the issue of a re-examination report.
If an adverse re-examination report is issued setting out objections to the validity of the patent, the onus is then placed on the patentee to address the objections raised. In some cases, a re-examination report may raise irresolvable issues which will inevitably lead to revocation of the patent. This may be the case, for example, for subject matter type issues. Alternatively, the re-examination report may raise issues which may necessitate a claim amendment.
Unlike a patent opposition to a patent application (which is conducted before the Patent Office) or a revocation procedure (which is conducted before the Federal Court of Australia), a re-examination procedure is conducted ex-partes, meaning that once a request for re-examination has been filed, the requestor has no further involvement in the procedure other than receiving a copy of the re-examination report.
The Balance of Probabilities
In addition to the expanded provisions available for re-examination, a further potential difficulty for patentees is that the standard of proof which applies during re-examination has changed. Whereas prior to April 2013 the Commissioner had the ability to revoke a patent in circumstances where the Commissioner was practically certain any granted patent was invalid, since April 2013 this ability has changed such that the Commissioner only now need be satisfied on the balance of probabilities that a patent would be or is invalid.
New Zealand Position
Since September 2014, New Zealand has adopted a similar approach for re-examination of accepted patent applications or granted patents using a similar process to that available in Australia.
The expanded grounds and more stringent validity considerations which have applied to re-examination since April 2013 mean that re-examination now presents a useful and relatively inexpensive approach to launch an initial invalidity attack on an Australian Patent. In circumstances where the grounds for requesting re-examination involve a clear anticipation or subject matter type issue, re-examination could provide a lower cost, shorter time frame, option for revoking an Australian patent. In the event that a request for re-examination was unsuccessful, a revocation procedure would still be an available option via the Federal Court.
Stephen O’Brien is a Senior Associate in our ICT Team and a member of our Oppositions, Re-Examination and Revocation Group.
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Australian patent law provides a relatively low-cost (pre-grant) procedure to oppose grant of a patent, on various grounds, by filing a Notice of Opposition within 3-months of the date of publication of acceptance. Once initiated, an opposition procedure is conducted before the Australian Patent Office.
Evidence is Pivotal
Importantly, Australia’s patent opposition procedure entails an evidentiary phase during which expert evidence is prepared and submitted by the opponent and the patent applicant. That evidence may comprise declarations by one or more experts setting out their opinions on, amongst other things, the disclosure of prior art references and the scope of the claims of the patent specification of the opposed application.
At the conclusion of the evidentiary phase, an inter-partes hearing is conducted leading to a decision on the outcome of the opposition. That decision depends, to a large extent, on the evidence filed prior to the hearing.
Timing for Filing Evidence
As a result of revised opposition requirements adopted in April 2013, the time periods for completing the different stages of the opposition procedure are more rigid and strictly enforced.
In particular, within 3-months of filing the Notice of Opposition, the opponent must submit their statement of case setting out the grounds and particulars on which the opposition is based. This statement, called the “Statement of Grounds and Particulars”, amongst other things, identifies relevant prior art documents and/or prior use activities intended to be relied upon, and particularises the relevance of those documents or use activities to the validity of the claims of the opposed application.
Within 3-months of filing the Statement of Grounds and Particulars, the opponent is then required to prepare and file “Evidence in Support” comprising their expert’s declaration(s) and supporting material. The applicant then has a period of 3-months, beginning after the “Evidence in Support” has been filed, to prepare and submit their “Evidence in Answer” responding to the “Evidence in Answer”.
As a final step prior to the hearing, the opponent is provided with a further 2-month period, beginning after the “Evidence in Answer” has been filed, to prepare and submit “Evidence in Reply” which responds to the “Evidence in Answer”.
Gathering and compiling expert evidence is a complicated activity requiring careful management of evidence preparation activities and planning to avoid steps which may otherwise jeopardise the opposition process. In some circumstances, despite the best efforts of the attorney responsible, such complications and considerations, when combined with limited availability of experts, can present challenges in finalising evidence within the required periods. In such cases, further time may be needed, but difficult to obtain via an extension of time.
Extensions of Time
Whereas prior to April 2013, extensions of time were available (and frequently relied upon), under the revised requirements extensions of time for completing the different stages of an opposition are not readily available, and may instead only (potentially) be available in particular circumstances. As a result, extensions of time to, for example, file Evidence in Support, have proven difficult to obtain. Despite the stricter enforcement of extension of time provisions, opponents and applicants are nevertheless continuing to apply for extensions of time to prepare and submit evidence, with varying degrees of success.
Public Interest Considerations
If evidence is not completed by the relevant date, and if an extension of time either has not been applied for or is refused, an additional opportunity to bring evidence into an opposition may be available via Regulation 5.23 of the Patent Regulations.
Regulation 5.23 was introduced as a part of the new patent procedural requirements in April 2013 and provides the ability for the Commissioner to retain a discretion to rely on documents that are not formally in evidence in order to protect the public interest. At the time of introduction of the new requirements, an Explanatory Statement  provided the following guidance as to extent of the discretionary type applicability of Regulation 5.23:
The Commissioner will be able to consider the document and then have the discretion to determine the most appropriate course of action in light of the information contained within the document. 
Regulation 5.23 may thus allow the Commissioner to consider “new” information even in circumstances where the information has been submitted outside the evidence periods.
In recent opposition decisions, the Australian Patent Office has interpreted the above statement and regulation 5.23 as requiring regard to the nature of the “new” information and whether the information is likely, if not certain, to change the outcome of the opposition in a significant way. If the new information is likely to so change the outcome of the opposition, then it appears that the Patent Office may allow such information to be filed outside of the evidentiary periods and considered during the opposition.
In the first Patent Office decision  to consider the application of Regulation 5.23, the required relevance of the information was considered in the context of an overlap between the applicability of that regulation and Australia’s re-examination provisions:
[i]t is in the public interest for highly significant information to be considered within an existing opposition and not wait for re-examination after the opposition is concluded. Less significant information should be allowed to wait until after the opposition has been concluded (considering that amendments resulting from the opposition may overcome the deficiency). 
In a series of decisions involving Innovia Security Pty Ltd as an opponent, the applicability of Regulation 5.23 has been further considered and applied to allow the opponent to submit new information, in the form of further evidence, outside the evidentiary phase.
In a first decision  involving Innovia Security Pty Ltd, the new information included a prior art document considered “… paramount to Innovia’s case on alleged anticipation, and from a preliminary assessment of its relevance it seems that reliance on document D1 may well change the outcome of the opposition in a significant way…”.  In this case, the discretion provided by regulation 5.23 was applied and the information considered.
In a subsequent and unrelated decision , involving the same opponent, the new information included a declaration intended to establish the publication date of a previously exhibited document which included information considered “significant, and indeed potentially pivotal, in the determination of the grounds of inventive step” . Once again the discretion was applied and the information considered.
In a third decision , also unrelated, the opponent relied on Regulation 5.23 again, this time to bring two new documents into opposition proceedings (prior to the hearing) which were considered “relevant to the grounds of novelty and inventive step” . Here again, the Commissioner applied her discretion under regulation 5.23 and allowed the information to be considered.
In each of the decisions involving Innovia Security Pty Ltd, none of the grounds for opposition were successful and thus it would seem that the new information considered under Regulation 5.23 did not change the outcome of the opposition.
Only Time Will Tell
Regulation 5.23 may provide an opportunity to have new evidence brought into an opposition in circumstances where the new evidence includes information which is more relevant to the grounds of novelty and inventive step than information previously exhibited, or substantiates facts associated with information already under consideration. Given the tightened extension of time provisions which apply to obtaining additional time to file evidence, it remains to be seen to what extent Regulation 5.23 will be relied upon as a de facto approach for obtaining an extension of time to file evidence.
Stephen O’Brien is a Senior Associate in our ICT team and a member of our Oppositions, Re-examination, and Revocation Group
 Explanatory Statement, Select Legislative Instrument 2013 No. 31, Issued by the Authority of the Minister for Industry and Innovation
 Ibid at page 21
 Merial Limited v Bayer Intellectual Property GmbH  APO 16 (14 April 2015)
 Ibid, paragraph 22
 Innovia Security Pty Ltd v De La Rue International Limited  APO 31 (25 June 2015)
 Ibid at paragraph 25
 Innovia Security Pty Ltd v OVD Kinegram AG  APO 26 (17 June 2015)
 Ibid at paragraph 7
 Innovia Security Pty Ltd v OVD Kinegram AG  APO 46 (6 August 2015)
 Ibid at paragraph 2
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